Thompson v. Hubbard, 131 U.S. 123 (1889)

8/17/2019 Thompson v. Hubbard, 131 U.S. 123 (1889)

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131 U.S. 123

9 S.Ct. 710

33 L.Ed. 76

THOMPSON

v.

HUBBARD.1

HUBBARD

v.

THOMPSON.

May 13, 1889.

These are cross-appeals from a decree of the circuit court of the United

States for the Eastern district of Missouri. On the 28th of November,

1882, Alfred H. Hubbard, a citizen of Pennsylvania, carrying on business

at Philadelphia under the name of Hubbard Bros., filed his bill of

complaint in that court against Nathan D. Thompson, a citizen of

Missouri, carrying on business at St. Louis under the name of N. D.

Thompson & Co. This bill alleges that in 1880 Thompson was the proprietor of a certain book entitled 'Illustrated Stock Doctor and Live

Stock Encyclopedia, including Horses, Cattle, Swine, and Poultry, with all

the facts concerning the various breeds and their characteristics, Breaking,

Training, Sheltering, Buying, Selling, profitable use, and general care;

embracing all the diseases to which they are subject, the causes, how to

know, and what to do; given in plain, simple language, free from

technicalities, but scientifically correct, and with directions that are easily

understood, easily applied, and remedies that are within the reach of the people; giving the most recent, approved, and humane methods for the

preservation and care of stock, the prevention of disease and restoration of

health. Designed for the farmer and stock-owner, by J. Russell Manning,

M. D., V. S., with 400 illustrations. Saint Louis, Mo., N. D. Thompson &

Co., Publishers, 520, 522, and 524 Pine Street, 1880.' That the book was a

compilation, the manuscript of which was owned by Thompson. That

Thompson entered it for copyright, in accordance with the provisions of

the statute. That he deposited a title-page of it in the office of the librarianof congress, on the 27th of March, 1880, and before its publication. That

thereafter, having published the book, he, on the 7th of June, 1880,

deposited two copies of it in the office of the librarian of congress, and


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printed in every copy of it, on the page next after the title-page, a notice of

copyright, as prescribed by statute, and thereby became the owner of the

copyright. That, on the 30th of March, 1880, Thompson entered into an

agreement in writing with Hubbard Bros., a firm composed of Hubbard

and one Ayer, carrying on business in Philadelphia, a copy of which

instrument, marked 'Exhibit A,' was annexed to the bill, and is set forth in

the margin,2 and which was duly recorded in the office of the librarian of congress. That thereafter, and on May 28, 1880, Thompson rendered to

Hubbard Bros. a further instrument in writing, in the form of a bill of sale

for the book, a copy of which was annexed to the bill and marked 'B,' and

was duly recorded in the office of the librarian of congress, and was as

follows:

ST. LOUIS, May 3d, 1880.

Messrs. Hubbard Bros., Philadelphia, Pa., bought

of N. D. Thompson & Co.

To complete set electrot. plates, stock

book, copyright, orginals of illustrations,

and stamps for binding same........ $4,000 00

Credit by amount deducted from bills

in April.............................. 500 00

$3,500 00

ments, H. Bros. agree to purchase, and do hereby purchase, the plates of Mg's Stock Dr., etc., as before described, paying for the same as follows,

viz.: $500 in present stock accounts unsettled, and $500, 24 months;

$1,000 by note at 8 months; $1,000 by note at 12 months; $1,000 by note

at 18 months; notes bearing interest at 6 per cent. per annum. They further

agree to supply N. D. T. all he may order of books from said plates in 500

lots, with his exclusive imprint and copyright mark, at 10 per cent.

advance on actual cost of manufacture, (said cost to include boxing and

drayage,) and for cash on receipt of goods by N. D. T. They further agreeto supply N. D. T. such of their other publications, (books and Bibles, as

are issued for sale through their home and branch offices,) at a discount of

65 per cent. off the retail price of the same, granting him the exclusive


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right of sale of close books in Mo., (excepting six counties adjacent to

Kansas City,) Ark., Texas, La., that part of Ky. and Tenn. lying west of

the Tenn. river, and So. Ill. It is mutually agreed that each party to this

contract shall be responsible to the other in the amount of $1 per copy for

any close or exclusive books sold upon the territory of the other, and that

all applications for agency coming from without the field of either shall be

referred to the party having right of sale, and a charge of 50 cents madefor each application so referred. It is further agreed that, should N. D. T.

go out of business, or for any reason cease to prosecute the sale or

Manning's Stock Dr., then the right of sale in his exclusive field shall

belong to H. Bros., unless his successor shall prosecute the sale in like

manner. The field on Stock Book to be same as on H. Bros book, except

as to six Co.'s adjacent to Kansas City. Plates to be made collateral

security for payment of notes.

HUBBARD BROS. Railroad, and in Tennessee the Nashville &

Montgomery Railroad; none of Alabama, instead of half of it, as in said

verbal agreement provided; and the whole of Missouri, Arkansas, Texas,

Louisiana, and Mississippi, and of the Indian Territory; and that

Thompson should have the right to work out agencies made outside the

field thus reserved prior to the acceptance by Hubbard Bros. of the

proposal last aforesaid; that Hubbard Bros., on the 16th of April, 1880,

declined such proposition, and made a counter-proposition to Thompson,

which he, on the 20th of April, 1880, declined to accept; that Thompson

then proposed that if the Iowa and Illinois territory which he reserved in

such proposition should be conceded to him, he would agree to the

proposition of Hubbard Bros. to make the territory to be reserved to him in

Kentucky and Tennessee all that lying west of the Tennessee river, the

other territory to be the same as in his said proposition; that Hubbard

Bros., on the 20th of April, 1880, proposed to accept the proposition last

aforesaid of Thompson if Thompson would relinquish the outside

agencies, meaning those agencies not within the territory reserved and to

be reserved to Thompson under his two propositions last aforesaid; that

Thompson refused to relinquish said outside agencies at once, but, on the

20th of April, 1880, proposed so to do by the 15th of July following,

provided Hubbard Bros. would accept his proposition of the 13th of April,

1880, as modified by his subsequent propositions aforesaid; that

afterwards, and on the 20th of April, 1880, and on the 24th of April, 1880,

Hubbard Bros. accepted the last aforesaid proposition of Thompson, and

any agreement then existing between Hubbard Bros. and Thompson, if notoriginally such as Thompson had averred, was modified in accordance

with said propositions and the acceptance thereof; that between the 4th

and 28th of May, 1880, Thompson shipped and caused to be delivered to


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Hubbard Bros. the plates, cuts, and stamps necessary for the manufacture

of the Manning book; that on the 26th of May, 1880, Hubbard Bros.

requested Thompson to send them a bill specifying the electrotype plates,

copyright, original wood engravings, electrotypes of illustrations, and

stamps for binding; that, on the 28th of May, 1880, he forwarded to them

the written paper marked 'Exhibit B' to the original bill; that on June 1,

1880, Hubbard Bros. sent to him notes for the $3,500 of the money part of the consideration, having theretofore allowed him $500 on current

account; that on the 22d of July, 1880, Hubbard Bros. sent to him a draft

in writing of a contract prepared in more regular form, a copy of which

was annexed to the cross-bill, and which, it is alleged, was materially

different from either of the said purported memoranda of agreement, and

from the said verbal agreement; that Thompson did not execute that draft;

that on the 2d of August, 1880, he prepared a draft of a contract, the

provisions of which were substantially the same as those of the verbalagreement as so modified, except that he made in it certain alterations by

way of concessions in favor of Hubbard Bros.; that he sent it to Hubbard

Bros., but they refused to execute it; and that afterwards there was further

dispute over the territory to be reserved, and on other points.

The cross-bill further alleges the bringing and pendency of the original

bill, and states its contents and the proceedings which had taken place in

the court in the original suit, and alleges that Thompson is still the owner

of the Manning book and the copyright thereof; and that Hubbard, ever

since he obtained possession of said property, had been and then was

publishing and selling the book without any legal copyright notice therein,

in the field which was to have been reserved exclusively to Thompson,

and thus had been, and was then, infringing the copyright of Thompson in

the Manning book, and threatened to continue to do so. The cross-bill

tenders to Hubbard the sum of $4,000 so paid by Hubbard Bros. to

Thompson, with interest at the rate of 6 per cent. per annum from the time

it was paid, upon the condition that Hubbard Bros. shall surrender to

Thompson the plates, cuts, and stamps for the Manning book, and such

other and further or different conditions as the court may order; and prays

for a perpetual injunction to restrain Hubbard from publishing, selling, or

offering for sale any copies of the Manning book, and for an account of

all copies of it published or sold, or to be published or sold, by Hubbard,

and for the payment to Thompson by Hubbard of all damage for an

unlawful publication by Hubbard of the Manning book, and for a decree

that Hubbard deliver back the plates, cuts, and stamps, on such conditionsas the court may order.

On the 19th of October, 1883, Hubbard filed an answer to the cross-bill,


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reaffirming the matter set forth in his original bill, and averring that all

communications in reference to the delivery of things purchased and

payment therefor between Thompson and Hubbard were in writing; that

the efforts made between the parties to agree upon a more perfect draft of

the agreement of March 30, 1880, failed, and therefore both parties to it

fell back upon its provisions; that the covenants of that agreement, in

reference to the sale of the Manning book and its purchase by Hubbard,were fully complied with, and the terms and conditions of the sale were

never called in question, or made a matter of dispute, until after Thompson

had completed and published his infringing book; that the covenants in

that agreement with reference to the mode of doing business between

Hubbard and Thompson were subsequently modified by correspondence,

so that Thompson was enabled to order books in less quantities than 500

copies at a time, and on shorter notice than had been provided in the

agreement of March 30, 1880; that in consideration of such varianceThompson agreed that the books furnished to him in smaller quantities and

on shorter notice should be charged at the rate of 65 per cent. off the retail

price; that there was some correspondence on the question of territory, and

also in reference to the covenants in the agreement of March 30, 1880, by

which Thompson agreed, for the period of two years from that date, to

publish no other book or books than those mentioned in the agreement,

and to devote his energies largely, for the period of two years, to the

vigorous prosecution of the sale of Hubbard Bros.' publications, and tothem exclusively; that it was agreed by both parties, in that

correspondence, that the adjustment of such matters in dispute should be

made the subject of a personal conference between the parties at the time

of a proposed visit of Thompson to Philadelphia, and it was also agreed

that at such conference the matter of the price at which Hubbard would

agree to furnish the Manning books to Thompson in smaller quantities and

at shorter notice than was provided in the agreement, should be settled

finally; that it was agreed between Thompson and Hubbard that the

contract between them was that the price to be paid by Hubbard for

'complete electrotype plates, Stock Book, copyright, originals of

illustrations, and stamps for binding' was $4,000; that the considerations

for the covenant on the part of Thompson that he would for two years

publish no books except 'Texas History, Almanac, and the Tice Almanac,'

and would devote his energies largely for two years to the vigorous

prosecution of the sale of Hubbard's books exclusively, paying for the

same within 60 days from date, all bills at the rate of 65 per cent. off from

retail prices, and for all circulars, prospectuses, posters, etc., at cost,

where the granting of the exclusive right of sale of Hubbard's 'close books

within the territory mentioned, and the agreement to furnish the Manning

books in lots of 500 at an advance of 10 per cent. on actual cost of


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manufacture, upon the further terms and conditions contained in the

agreement of March 30, 1880; that, after Thompson had completed the

delivery of the electrotype plates, illustrations, stamps, etc., and Hubbard

had given to Thompson his promissory notes, the sale of the Manning

book to Hubbard was complete, and the agreement providing for the sale

and mode of payment was of no further legal effect than as an instrument

in writing conveying the copyright, and the covenants providing for theregulation of the business of the publication and sale of books between the

parties, which were executory, and were to continue for the period of two

years, remained in force, subject to modifications from time to time made

and agreed to by the parties; that, notwithstanding the failure of

Thompson to order books in accordance with the terms of the contract,

Hubbard filled all orders for books made on him by Thompson, imposing

the condition, nevertheless, that, until Thompson would bring himself

under the terms of the contract of March 30, 1880, Hubbard would chargethe Manning books to Thompson at 65 per cent. off from the retail price,

upon condition, however, that if Thompson would subsequently, upon his

promised visit to Philadelphia, put himself upon the covenants of said

contract, and show a willingness to perform them, Hubbard would abate

the price at which the books were charged; that Thompson assented to

such a course of dealing; that it is not true that the correspondence

between the parties had reference to the contract of sale of the Manning

book, plates, cuts, stamps, and copyright; that such contract of sale wasnot at any time spoken of as annulled, withdrawn, or rescinded, and no

words were used in reference thereto which could be considered by

Thompson to be a rescission, or an implied rescission, or an intended

rescission, of the contract; that Thompson and Hubbard at all times

considered the sale of the Manning book, including plates, cuts, copyright,

etc., and the payment therefor, as complete, when the promissory notes

were forwarded to Thompson by Hubbard; and that such sale was treated

as conclusive, complete, and absolute, by Thompson and Hubbard, until

after Thompson had published the Periam and Baker book, and it was only

then that Thompson began to dispute the title of Hubbard in the Manning

book and the copyright thereof.

A replication was filed to the answer to the cross-bill, proofs were taken

on both sides, and it was stipulated between the parties that all proof taken

in either suit might be used in both. The case was brought to a hearing

before Judge TREAT, the district judge, and on the 8th of July, 1885, he

made a decision, holding that, if the copyright of the Manning book had been transferred to Hubbard, the Periam and Baker book was an

infringement of it, but ordering a reargument before the circuit judge

(Judge BREWER) and himself, on three questions: (1) Whether


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Thompson assigned the copyright of the Manning book to Hubbard, so

that Hubbard could pursue him for an infringement; (2) whether, if such

assignment was made, it was rescinded; (3) whether, inasmuch as the

imprint of Hubbard's publication did not conform to the terms of the

statute, he could maintain an action against Thompson for an

infringement, although Thompson knew that the copyright had been

granted. The case was heard before the two judges, and was decided in anopinion given by Judge BREWER, and reported in 25 Fed. Rep. 188. The

view of the court was that the testimony left the matter much in doubt

whether the paper signed on March 30, 1880, was understood by the

parties to be a definite and closed contract 'or a mere preliminary

statement—a memorandum of matters upon which they had agreed, and

which, with all unsettled details, were thereafter to be put into the form of

a complete contract in writing, and then signed and executed. The

conclusion of both judges was stated to be that there was not in thetestimony that which enabled the court to say that the parties, in respect to

all the items of the proposed agreement between them, ever came to a

definite understanding; that there were still some matters unsettled and

undetermined, so that a contract, as it was a single contract, and

understood to be a single contract, could not be said to have been finally

and definitely consummated; that the cross-bill ought to be sustained so

far as concerned the tender, that is, the plates ought to be returned to

Thompson upon the payment by him to Hubbard of the $4,000 andinterest, but that, so far as any claim by Thompson for an accounting and

damages was concerned, the course of dealing between the parties had

been such that equitably Thompson was not entitled to any such

accounting. On the 27th of October, 1885, a decree was made, entitled in

both suits, adjudging that no assignment or sale of the copyright of the

Manning book, or of the electrotype plates, originals of illustrations, and

stamps for binding, was ever made by Thompson to Hubbard by virtue of

the instruments of writing and acts mentioned and described in the

original bill, and that Hubbard neither acquired nor had any title to or

ownership in the copyright of said book under said instruments and acts,

or any of them, and dismissing the original bill; and it was decreed under

the cross-bill that Thompson was and always had been the owner of the

copyright, electrotype plates, originals of illustrations, and stamps for

binding, of the Manning book, and that Hubbard, on the tender to him of

$4,000 with interest from May 15, 1880, to the date of the tender, should,

on demand, surrender and deliver back to Thompson the electrotype

plates, originals of illustrations, and stamps for binding pertaining to said

book, and received by him from Thompson; that if such tender should not

be accepted, then said sum and interest should be paid into the registry of

the court, to abide its further order; that Thompson was not equitably


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entitled to an accounting and damages; and that each party should pay its

own costs. From this decree each party has appealed to this court.

John B. Henderson, for Thompson.

J. R. Sypher, S. M. Breckenridge, and John G. Johnson, for Hubbard.

BLATCHFORD, J.

We are unable to concur in the conclusion of the circuit court on the

question of the sale by Thompson to Hubbard of the copyright of the

Manning book. The price of the book and its copyright, including

originals of cuts, circulars, plates, and book stamps, having been fixed by

agreement at $4,000, the disputed point in the negotiations of March 30,

1880, was as to the extent of territory to be allowed to Thompson for the

sale of the Manning book, he insisting upon being allowed more territorythan was specified in the draft agreements produced by Hubbard. The two

drafts, one of which was retained by each party, differ practically only as

to the amount of territory in which Thompson was to be allowed to sell the

Manning book. The two instruments agree as to the territory in which

Thompson was to have an exclusive right to sell the other publications of

Hubbard. The two parties differ in their testimony as to what was agreed

upon in regard to the clause which is substantially the same in both of the

instruments, namely, 'the field on stock book to be the same as on H. Bros. books, except the six counties in Missouri adjacent to Kansas City;'

Hubbard testifying that his copy represented exactly what had been settled

upon, and that the concluding paragraph was added to make everything

certain, while Thompson testifies that he supposed the concluding

sentence was added to express the understanding about the plates being

collateral security for the notes which were to be given, although the

special provision about the collateral security was inserted in the paper

retained by him, as well as in that which he signed. The two papers agreein providing for the sale to Hubbard of the plates of the Manning book,

including copyright, the originals of cuts, h e stamps for binding, and the

plates for circulars, for $4,000, the same to be delivered, well boxed, at

the depot in St. Louis, free of charge for boxing or drayage, as soon as the

first edition, then printing, should be off the press. They also agree in

stating that Thompson should pay for all books which should be

manufactured from the plates upon his order, with his exclusive imprint

and copyright mark, if ordered in lots of not less than 500 at a time, payable in cash in 60 days, the price to be 10 per cent. in advance of the

cost to Hubbard Bros. of their manufacture, and also the further cost of

boxing and drayage. The two papers also agree in providing that for the


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period of two years Thompson would publish no books except those he

then had in course of publication, namely, Texas History, Almanac, and

the Tice Almanac, and would devote his energies largely for that period to

the vigorous prosecution of the sale of the publications (books and Bibles)

of Hubbard Bros., and theirs exclusively, (including Bibles,) aside from

his own, as named, paying for the same within 60 days of date of bills, at

the rate of 65 per cent. off from the retail prices, and for all circulars, prospectus books, posters, etc., at cost. The two papers also agree in the

time and manner of payment, in cash and in notes, for the plates and

copyright. The two papers also agree in providing that Hubbard Bros.

should supply Thompson with all books he might order from such plates

in 500 lots, with his exclusive imprint and copyright mark, at 10 per cent.

advance on the actual cost of manufacture, also the cost of boxing and

drayage, to be paid in cash on the receipt of the goods by Thompson; and

in the statement that Hubbard Bros. would supply Thompson with their other books and Bibles at a discount of 65 per cent. from the retail prices

of the same; and that they granted him the exclusive right of the sale of

their 'close' books in certain specified territory; and in stating that each

party should be responsible to the other in the amount of $1 per copy for

any 'close' or exclusive books sold in the territory of the other, and that all

applications for agency coming from without the field of either should be

referred to the party having the exclusive right of sale, and a charge of 50

cents be made for each application so referred, and that, if Thompsonshould go out of business, or for any reason cease to prosecute the sale of

the Manning book, the right of sale in his exclusive field should revert to

Hubbard Bros., unless his successor should prosecute the sale in like

manner as he would have done.

Afterwards, in correspondence with Hubbard, Thompson insisted upon

being allowed a large territory for the sale of the Manning book than that

specified in the paper he had signed. Hubbard insisted that the provision

which appears in both of the papers, 'The field on stock book to be the

same as on H. Bros. books, except the six counties in Missouri adjacent to

Kansas City,' specified the territory which had been settled upon.

Thompson also, in a letter to Hubbard, desired a date to be fixed for the

notes and for the commencement of the two years of his exclusive right in

the Hubbard books. As to those matters, Hubbard replied that the date of

the notes and the commencement of the two years would properly be

fixed as of the date of the delivery of the plates. The dispute about the

territory to be allowed to Thompson in respect to the Manning book continued, but was finally settled in a correspondence which occurred in

April, 1880, and such settlement resulted in the shipment of the plates by

Thompson to Hubbard, and in the payment of the consideration therefor,


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by $500 of cash and $3,500 in notes, the longest of which ran for two

years from the 15th of May, 1880, and all of which were duly paid.

Thompson testifies that he shipped the plates because he and Hubbard had

come to an agreement as to territory; and he also sent to Hubbard the bill

of sale before set forth as a part of h e original bill. In inclosing to

Thompson, on the 1st of June, 1880, the notes amounting to $3,500,

Hubbard wrote to him as follows: 'We inclose herewith notes to theamount of $3,500, which, with $500 allowed you on book-account, is in

full settlement of your bill of May 3d for plates, copyright, original cuts,

and stamps for binding, of Manning's Illustrated Stock Doctor and Live

Stock Encyclopedia. The first lot of plates did not reach us till about the

12th, second lot about the 18th, and third lot is not in yet; so we date notes

the 15th, which is sooner than is really due you. Please acknowledge

receipt in full, and oblige.' The notes were all of them dated May 15, 1880,

and each of them bore interest at 6 per cent. per annum; the three $1,000notes being payable respectively at 8, 12, and 18 months after date, and

the $500 note at two years after date. Thompson, in a letter to Hubbard

Bros., dated June 4, 1880, acknowledged the receipt of the four notes, and

said; 'With $500 previously allowed, they are payment in full of plates,

engravings, copyright, and all the material that enter into the manufacture

of the Stock Book. The reservation being that we control certain field, and

are to get books at a certain rate above actual cost of manufacture.' The

draft of an agreement which Hubbard sent to Thompson in July, 1880,related only to future deliveries of the Manning book, to the territory in

which it was to be sold by Thompson, and to the exclusive agency by

Thompson for the publications of Hubbard. It did not mention the sale of

the plates or the copyright, or the consideration therefor, because that had

been settled by the bill of sale and the delivery of the notes; and it fixed

the territory in which the Manning book was to be sold by Thompson,

according to the limits which had been settled upon by the compromise of

April, 1880. Up to July, 1880, after the compromise of April, 1880, no

controversy had arisen in regard to any copies of the Manning book

ordered by Thompson, because he had ordered none, having on hand the

edition which he had printed before he delivered the plates to Hubbard.

The draft agreement prepared by Thompson and sent by him to Hubbard

in August, 1880, differed in matters which Hubbard considered material

from the draft agreement sent by Hubbard to Thompson in July, 1880. We

are of opinion that the transaction between the parties in regard to the sale

of the copyright of the Manning book and the plates therefor was a

completed transaction, independently of all contracts or agreements in

regard to other matters; that the consideration therefor was paid; and that

that contract was never rescinded. The remark made by Hubbard in his

letter to Thompson of August, 12, 1880, 'I am quite agreeable to your view


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that there is virtually no agreement between us,' had reference to matters

other than the sale of the copyright and the plates, which had passed to

Hubbard, and which he had in his possession, and for which he had paid

partly in cash and partly in the negotiable promissory notes of Hubbard

Bros. There was no idea on the part of either party that the copyright and

the plates were to be reconveyed to Thompson, or that he was to repay the

consideration to Hubbard. Neither party suggested anything of the kind.Hubbard was publishing the book, and pushing its sale; and Thompson, in

and after the fall of 1880, was buying from Hubbard, and paying for such

copies of the Manning book as he desired to sell. The real dispute between

the parties was as to the extent to which Thompson should be bound to

exert himself in selling Hubbard's other publications, and should be

restricted in selling any other publications than the three specified in the

paper of March 30, 1880, and the point which concerned the matter of the

sale of Hubbard's publications for two years had become unimportantwhen the original bill was filed, because that time had then expired. The

preparing and publishing by Thompson of the Periam and Baker book was

entirely inconsistent with the ie a that he still owned the copyright of the

Manning book. At the time the original bill was filed, Hubbard had fully

performed his agreement to furnish the Manning book to Thompson as

Thompson ordered it, had respected the territory allotted to Thompson,

and had shipped his other publications to Thompson as demanded. On

these facts, there could be no revesting in Thompson of the title to thecopyright and the plates, and all that he could ever have a right to,

growing out of the failure by Hubbard to perform any agreements which

he had entered into, was a remedy by damages in an action at common

law, or a remedy by a bill in equity for specific performance, on the basis

of the existence of the actual agreement made.

The remaining question is as to whether Hubbard, as the owner of the

copyright of the Manning book, can maintain his suit against Thompson

for its infringement. The following statement is made in the brief for

Hubbard: 'It is conceded that plaintiff's book was duly entered for

copyright; that before publication a printed copy of the title of the book

was delivered at the office of the librarian of congress at Washington; that

within ten days after publication two complete copies of the best edition

of the book were delivered at the office of the librarian of congress, at

Washington; and that on the page next after the title-page there was

printed in every copy of the first edition of the book notice of copyright in

the following words, viz.: 'Entered according to Act of Congress, in theyear, 1880, by N. D. Thompson & Co., in the office of the Librarian of

Congress, at Washington.' It is also conceded that after Mr. Thompson

had delivered the electrotype plates of the book to Hubbard Brothers, they


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give such notice debars him from maintaining an action for the

infringement of his copyright. The word 'action' means an action either at

law or in equity. Section 3 of the act of May 31, 1790, c. 15, (1 St. 125,)

declared that no person should be entitled to the benefit of that act, unless

he should first deposit a printed copy of the title of a book in the

prescribed office, and further provided that the author or proprietor

should, within a prescribed time, cause a copy of the record of the title to be published in one or more newspapers, as prescribed. Section 1 of the

act of April 29, 1802, c. 36, (2 St. 171,) provided that every person who

should seek to obtain a copyright of a book should, in addition to the

requisites enjoined in the act of 1790, give information, by causing the

copy of the record to be inserted at full length in the title-page, or in the

page immediately following the title of the book. Section 5 of the act of

February 3, 1831, c. 16, (4 St. 437,) declared that no person should be

entitled to the benefit of that act, unless he should insert the prescribedwords in the published copies of the book. In section 97 of the act of July

8, 1870, c. 230, (16 St. 214,) now section 4962 of the Revised Statutes,

the language of section 5 of the act of 1831 was changed so as to declare

that no person should maintain an action for the infringement of his

copyright, unless he should insert in the several published copies the

notice prescribed. This requirement of giving the prescribed notice has

always been held, under all of the statutes, to be one of the conditions

precedent to the perfection of the copyright, the other two being thedeposit, before publication, of the printed copy of the title, and the

depositing in the public office, within the prescribed time after

publication, of a copy or copies of the book. Wheaton v. Peters, 8 Pet.

591; Merrell v. Tice, 104 U. S. 557; Callaghan v. Myers, 128 U. S. 617,

652, ante, 177. It is not enough that Thompson, while he owned the

copyright, gave the required notice in the copies of every edition he

published while it was his copyright. The inhibition of the statute

extended to and operated upon Hubbard while he owned the copyright, in

respect to the copies of every edition which he published, and for his

failure he is debarred from maintaining his action.

The view is urged that the only object of the notice required by the statute

is to give notice of the copyright to the public; and that, as Thompson

himself took the copyright, and had vested the title to it in Hubbard, he has

no right to infringe the copyright, although it may be invalid as to the rest

of the world. But we are of opinion that the failure of Hubbard to comply

with the statute operated to prevent his right of action against Thompsonfrom coming into existence. This right of action, as well as the copyright

itself, is wholly statutory, and the means of securing any right of action in

Hubbard are only those prescribed by congress. Wheaton v. Peters, 8 Pet.


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591, 662, 663; Banks v. Manchester, 128 U. S. 244, 252, ante, 36. The

decree of the circuit court is reversed, and the case is remanded to that

court, with directions to dismiss the original bill and thec ross-bill, with

costs in the circuit court to neither party. Each party is to pay one-half of

all the costs in this court.

1 Reversing 25 Fed. Rep. 188.

2 MEMORANDUM OF AGREEMENT.

N. D. Thompson agrees to sell, and does hereby sell, to H. Bros. the entire

plates (not less than one thousand pages) of a new book entitled

Manning's Illustrated Stock Doctor and Live Stock Encyclopedia, for the

sum of $4,000, including copyright, the originals of the illustrations, all

the stamps for binding the book, and circular plates, and deliver same as

soon as first edition now printing is off press, shipping same toPhiladelphia, and delivering same well boxed to the depot in St. Louis,

free of charge for boxing or drayage.

He agrees further to pay for all books manufactured from said plates, upon

his order, with his exclusive imprint and copyright, cash within sixty days,

and to order not less than five hundred at a time, and to order in time to

admit of their being bound after receipt by Hubbard Bros. of the order. He

agrees to pay for all books he orders made from said plates, a net pricewhich shall be ten per cent. in advance of cost to H. Bros., of their

manufacture, and also the further cost of boxing and drayage.

He further agrees to confine his sales to the following territory: The states

of Mo., Ark., Indian Territory, La., Texas, Miss., So. Ill., Kentucky and

Tenn., west of Tenn. river. He further agrees, for the period of two years,

to publish no books except those he now has in course of publication, viz.:

Texas History, Almanac, and the Tice Almanac, and to devote hisenergies largely for the above period to the vigorous prosecution of the

sale of the publications (books and Bibles) of Hubbard Bros., and theirs

exclusively, including Bibles, aside from his own as named, paying for

the same within sixty days of date of bills at the rate of 65 per cent. off

from retail prices, and for all cirs., pros. books, posters, etc., at cost.

3 MEMORANDUM OF AGREEMENT.

N. D. T. agres to sell H. Bros. the plates (1,000 p.) of Manning's Stock Dr., etc., including copyright, the originals of cuts, stamps for binding,

and circular plates, for $4,000, and deliver same soon as first edition, now

printing, is off press, well boxed, at depot in St. Louis, free of charge for


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boxing and drayage.

He agrees further to pay for all books manufactured from said plates upon

his order, (with his exclusive imprint and copyright mark;) to order not

less than 500 at a time, and sixty days, and in time to admit of their being

bound, after receipt by Hubbard Bros. of his order. He agrees to pay for all

books he orders made from said plates a net price of ten per cent. inadvance of cost of manufacture, including boxing and drayage.

He further agrees to confine his sales to the following territory, viz.: the

states of Missouri, Arkansas, Indian Territory, Louisiana, Texas,

Mississippi, Southern Illinois, one-third of each Indiana, Kentucky,

Tennessee.

He further agrees, for the period of two years, to publish no books, except

those he now has in course of publication, viz.; Texas History, Almanac,and the Tice Almanac, and to devote his energies largely for the above

period to the vigorous prosecution of the sale of the publications (books

and Bibles) of Hubbard Bros., and to theirs exclusively, (including

Bibles,) (aside from his own, as named,) paying for the same within sixty

days of date of bills, at the rate of sixty-five per cent. off from the retail

prices, and for all circulars, prospectus books, posters, etc., at cost. In

consideration of the fulfillment of the foregoing covenants and agree-

In consideration of the fulfillment foregoing covenants and agreements,

Hubbard Bros. agree to purchase and do hereby purchase, the plates of

Manning's Stock Doctor, etc., as before described, paying for same $500

offset present ac.; $1,000 by note at 8 mos.; $1,000 note at 12 mos.;

$1,000 by note at 18 mos.; $500 by note at 24 mos.; notes bearing interest

at 6 per cent. per annum. They further agree to supply N. D. Thompson all

he may order of books from said plates in 500 lots, with his exclusive

imprint and copyright mark, at 10 per cent. advance on actual cost of manufacture, also cost of boxing and drayage, on 60 days by N. D.

Thompson. They further agree to supply N. D. Thompson their other

books and Bibles made for sale through and supplied to their branches, at

a discount of 65 per cent. from the retail prices of the same, granting him

the exclusive right of sale of close books in Mo., (excepting six counties

adjacent to Kansas City,) Ark., Texas, La., that part of Ky. and Tenn.

lying west of the Tennessee river, and So. Ill. It is mutually agreed that

each party to this contract shall be responsible to the other in the amt. of $1.00 per copy for each copy of exclusive or close books sold in the

other's territory by the general agents or canvassing agents of the opposite

party; and further, that all applications for agency of close or exclusive


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given in plain, simple language, free from technicalities, but scientifically

correct, and prescribing remedies readily obtained and easily applied.

Designed for the successful and profitable use of the American Farmer

and Stock Owner. By Hon. Jonathan Periam, editor 'American

Encyclopedia of Agriculture;' editor 'Prairie Farmer;' former editor

'Western Rural;' Member Illinois Department of Agriculture; first

Superintendent of Agricultural Illinois Industrial University; Life Member American Pomological Society; author 'History Farmers' Movement;'

'Lessons for Life,' etc., etc.,; and A. H. Baker, V. S., Veterinary Editor

'American Field;' Veterinary Surgeon Illinois Humane Society; Medalist

of the Montreal Veterinary College; Member of the Montreal Veterinary

Medical Association, etc., etc. With over 700 appropriate engravings.

Saint Louis, Mo.: N. D. Thompson & Co., Publishers, 520, 522, and 524

Pine street. 1882;'—and that such book was an infringement on the

Manning book; its materials being copied in great part therefrom; thecombination and arrangement of them in the two books being similar in all

material respects.

The bill prays for an injunction, both preliminary and perpetual, to restrain

Thompson from printing, publishing, and selling, or offering for sale, any

copies of the Periam and Baker book, and for an account of those

published and sold, and for the payment of the damages suffered by

Hubbard, and for general relief. An application for a preliminary

injunction was denied by the court, but it required Thompson to give a

bond in $5,000, to answer any damages that might be adjudged against

him, and to keep an account of the books in question which he had sold or

should sell. On the 5th of February, 1883, Thompson filed an answer to

the bill, in which he admits that he was the owner of the manuscript of the

Manning book, and obtained the copyright therefor. It alleges that said

Exhibit A was not recorded in the office of the librarian of congress until

August 23, 1882; that before March 30, 1880, Hubbard Bros., composed

of Hubbard and Ayer, entered into negotiations with Thompson to

purchase from him the Manning book, including the copyright thereof

which was thereafter to be obtained, the originals of cuts, stamps for

binding, and plates for circulars; that on the 30th of March, 1880,

Thompson met Hubbard at the Union depot in St. Louis, and there, and on

the railroad train while passing, on that day, from St. Louis to East St.

Louis, Thompson verbally agreed with Hubbard, for Hubbard Bros., on

the basis for the future sale of said book, copyright, originals of cuts,

plates, and stamps; that such agreement for the sale, thereafter to be made,was on the terms that Thompson would sell to Hubbard Bros. the plates

necessary for printing the books, including the copyright, originals of cuts,

and stamps for binding, Thompson to hv e the right first to publish an


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edition of 2,000 copies of the book, and then to deliver the plates, cuts,

and stamps, properly packed for shipping, at the Union depot in St. Louis,

and in consideration thereof Hubbard Bros. were to pay to Thompson

$4,000, and also to manufacture said book for him, and deliver the same

to him in St. Louis at a less cost than that for which he was then

manufacturing the book, agreeing to manufacture and deliver it to him in

St. Louis for a less price than $1.10 per copy, and that the book so to bemanufactured for and delivered to Thompson should in each copy contain

the name of 'N. D. Thompson & Co., publishers, St. Louis, Missouri,'

exclusive of the name of any other publisher, and should contain, on the

proper page, the exclusive copyright notice of N. D. Thompson & Co., in

accordance with the act of congress; that Thompson would order delivery

of the books in lots of 500 copies, Hubbard Bros. to have a reasonable

time after the receipt of the order in which to have the books bound; that

the books should be furnished to Thompson at a net price of 10 per cent.in advance of the actual cost of manufacture, including boxing and

drayage, and that Thompson should have the exclusive right to sell the

book within the bounds of the following territory, namely, the states of

Missouri, Arkansas, Indian Territory, Louisiana, Texas, Mississippi, and

that portion of Iowa bounded on the north by the third tier of counties

from the Missouri line, and that part of Illinois, not including, but south of,

Rock Island and Will counties, constituting about three-fourths of the state

of Illinois, and also in that portion of Kentucky and Tennessee bounded onthe east by the Louisville & Nashville and the Nashville & Chattanooga

Railroads, and also a portion of the state of Indiana; that Thompson,

having agents and canvassers engaged in selling the book on subscription

for future delivery, in Iowa, Wisconsin, Michigan, Illinois, and Ohio, at

places and covering territory not included in that before mentioned, should

continue to sell the book by such agents and canvassers then in his

employ, in such territory then occupied by them; that Hubbard Bros. also

agreed with Thompson that they would sell and furnish to him all other

books and publications manufactured or issued for sale by them, through

their house or branch offices, at a discount of 65 per cent. off from the

retail price of the same, and that he should have the exclusive right to sell

said books and publications of Hubbard Bros. in Missouri, (excepting the

six counties adjacent to Kansas City,) and also in Arkansas, Texas,

Louisiana, that part of Kentucky and Tennessee lying west of the

Tennessee river, and the southern half of Illinois; that Hubbard Bros.

would supply to him all circulars, prospectus books, and posters necessary

and usual in prosecuting the sale of said books, at the cost price thereof,

payment to be made for the same, and for said publications of Hubbard

Bros., by Thompson, within 60 days from the date of sale; that a contract

and agreement should be written in proper form and executed by


19/22

Thompson and Hubbard Bros., in accordance with and on the

considerations aforesaid, and that in such contract Thompson would agree,

for two years from its execution, to publish no books other than such as he

then had in course of publication, and devote his attention largely to the

sale of such publications of Hubbard Bros., to be so purchased from them,

and to push the sale thereof exclusively, except as to publications of

Thompson; that each party to the contract so to be entered into would payto the other $1 per copy for each copy of the Manning book sold by either

in any of the territory to be so reserved and exclusively set apart for the

other; that all applications for agencies for the sale of any of the said

books, coming to one of the parties from territory reserved exclusively for

the other, should be by such party referred to the other; that the party to

whom such apl ication should be referred would pay to the other 50 cents

for every such application; that, if Thompson should go out of business, or

cease to prosecute the sale of the Manning book, then, unless thesuccessor of Thompson would continue the same, Hubbard Bros. should

have the exclusive right to sell said book; and that, on the execution of

such contract, Thompson would assign the copyright to Hubbard Bros.,

and they would execute a mortgage to him on such plates, cuts, and

stamps, to secure to him the performance of the contract.

The answer further alleges that the $4,000 so to be paid by Hubbard

constituted only a small portion of the consideration of the contract to be

made; that the plates, cuts, and stamps were of greater value than $10,000;

that Hubbard, falsely pretending to have made a memorandum in writing,

with pencil, on paper, containing an outline of the terms and

considerations of the contract thereafter to be entered into, a copy of which

memorandum written by Hubbard is Exhibit A to the bill, represented to

Thompson that such memorandum was incomplete, but contained the

outlines of the contract thereafter to be made in accordance with such full

understanding of the parties, and promised that he would prepare a

contract in proper form, in writing, and elaborate the same in accordance

with such considerations, and that Hubbard Bros. would execute it; that

thus, by fraud and deceit, Hubbard persuaded Thompson to sign, with a

pencil, such memorandum, Thompson at the time believing and relying on

such false promises and representations of Hubbard; and that such

memorandum was not agreed upon as, or understood or intended to be, the

contract to be entered into by Thompson and Hubbard Bros., nor was it

understood as, or intended to be, an assignment of the copyright of the

book.

The answer further avers that Thompson, believing that Hubbard Bros.

would in good faith execute the contract as agreed to be made, and carry


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21/22

parties had in his hands a written paper, both of which were produced by

Hubbard at the time; that during the consideration of such writings

Hubbard made or pretended to make some alterations in the one held by

him, which instrument and alterations Thompson did not at the time

examine or read; that neither of the writings was at the time altered to

correspond with the verbal agreement, and the two writings were not at

the time compared, and the alterations so made in the one held byHubbard were not made in the one held by Thompson; that after wards

Hubbard proposed to insert, and did insert, in said writings the clause:

'Plates to be made collateral security for payment of notes;' that that clause

was not in accordance with the agreement then and there made, it having

been agreed that the plates should be collateral security for the

performance of the verbal agreement; that after wards, and when the train

was about to leave East St. Louis, where Thompson was to leave it and

return to St. Louis, Hubbard, representing to Thompson that the writingswere incomplete, but that they contained the outlines of the contract

thereafter to be made, and promising that he would prepare in proper

form, in writing, a contract, and elaborate it in accordance with the verbal

agreement and the considerations before set forth, and that Hubbard Bros.

would execute it, and representing and promising that the said writings

would be used only as a guide and outline, from which the real agreement

would be drawn and framed in accordance with the full understanding of

the parties as so set forth, persuaded, Thompson to sign, with a pencil, thewriting attached to the original bill as Exhibit A; that, immediately on the

return of Hubbard to Philadelphia, Hubbard Bros. caused their agents to be

instructed to observe the boundary lines of the territory reserved to

Thompson in said verbal agreement as territory which had been reserved

exclusively to Thompson thereby; that Thompson did not at the time see or

know that the following clause in the writings was contained therein,

namely, 'The field on stock book to be the same as on H. Bros. books,

except the six Co's in Mo. adjacent to Kansas City,' and did not discover

the same until a day or two after he had signed the memorandum; that that

clause was inserted by Hubbard without the knowledge and consent of

Thompson, and Thompson never agreed or intended to agree to the same;

that immediately after he discovered that clause in the writing retained by

him, (a copy of which writing is contained in the margin,3) he and

Hubbard Bros. had a correspondence in relation to the territory to be

reserved to him, in which he insisted upon the territory described in such

verbal agreement as that agreed upon between Hubbard Bros. and himself

to be reserved to him, except as afterwards mentioned in the cross-bill;

that on the 13th of April, 1880, he proposed, by way of concession to

Hubbard Bros., that instead of the territory agreed to be reserved by the

verbal agreement, the territory to be reserved by the contract to be made


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should be as follows: The two southern tiers of counties in Iowa, instead

of three, a in said verbal agreement provided as aforesaid; Illinois, south

of and including the counties of Henry, Bureau, La Salle, Grundy, and

Kankakee; none in Indiana, instead of a third of it; the boundary line in

Kentucky to be the Louisville & Nashville

Documents

Thompson v. Hubbard, 131 U.S. 123 (1889)